Patent Reform: Required Pre-Filing Search and Patentability Analysis

The PTO’s accelerated examination program (formerly petition to make special) requires that the applicant conduct a prior art search and provide an extensive discussion of how the submitted prior art relates to each claim. As mentioned in earlier Patently-O posts, I expected that the program somewhat of a prototype — if all goes well, the PTO may require a preliminary search and discussion of prior art findings for all cases.

The future is here: The recently amended Senate Bill includes orders for the PTO Director to require search reports and patentability analyses for all filed applications (except for those filed by “micro-entities”).  Failure to submit a report would result in abandonment.  A new 35 U.S.C. Section 123 would read as follows:

“The Director shall, by regulation, require that applicants submit a search report and other information and analysis relevant to patentability.  An application shall be regarded as abandoned if the applicant fails to submit the required search report, information, and analysis in the manner and within the time period prescribed by the Director.  Applicants from micro-entities, as defined in section 124 of this title, shall not be subject to the requirements of any regulations promulgated pursuant to this section.”

In the past, IPO President Marc Adler has suggested on his blog that patentees should conduct pre-filing searches. [LINK]. Of course. Mr. Adler’s comments suggest only a voluntary system.


90 thoughts on “Patent Reform: Required Pre-Filing Search and Patentability Analysis

  1. 90

    I was quoted thusly:
    “Gideon has another off-kilter view that deserves a comment – that a patent should cover only the client’s “commercial embodiment.””

    That’s not at all what I wrote, and I find it somewhat shabby that you would characterize my words like that.

    It’s as if I said to a friend, “make sure you never change your sense of humor”, and that got reworded to “Gideon says all I have going for me is my sense of humor.”

    What I wrote was that it makes little sense to me to jeapordize the commercial embodiment by attempting to include embodiments that are so far afield so as to be virtually worthless to the client.

    When I hear a client saying, “yeah, this has literally dozens of applications. You can use it for X and it would work for Y”

    I respond with – OK, but why not file one application specifically for the thing that your business does – X. File a second or more for the other [crap].

    Most of the time, after some thought, the client decides not to pursue the other applications.

    Why? Because they realize that it makes more sense to focus your energy/money on X, which is what you do, then on Y, which is something you’ll never touch.

    In any event, I hate contaminating a nice, tight application with “this can be used for anything” description and claims. Nothing screams “I’m obvious” more than a claim whose scope falls on 15 different arts, none of which are related.

  2. 89

    I agree with George | Jul 23, 2007 at 01:13 PM, I also usually find that Google and I do a better search than professionals. Who is less important than the yes/no question.

    When you commission a search, always ask the searcher to call you at the beginning and get some guidance. (I’ve never gotten a good search based solely on written instructions.) If you get a lousy search, especially if the searcher did not follow instructions, send it back and ask the searcher to do it over again. Most are happy (well, happy enough) to do so.

    Zeke understands.

    I also agree with Lionel Hutz | Jul 23, 2007 at 12:35 PM – if you can afford multiple independent claims of concentric scope, go for it. The point is that it’s misguided to frame independent claims narrower than necessary based on the fear that there may be prior art out there. The way to hedge that risk is not with narrow independent claims, but with dependent claims or multiple independent claims.

    Gideon has another off-kilter view that deserves a comment – that a patent should cover only the client’s “commercial embodiment.” A patent only has value to the extent it covers what an infringer wants to do. Drafting claims to cover “what the prior art is not” is the best way to get there. Sure, you might have a picture claim for the product (how do you know that will be the same product in 15 years?), but if that’s where your focus is, you get lousy claims.

  3. 88

    “…you’d be a fool to think that a 2,000$ search tells you what the art”

    It’s undeniable that we cannot know everything, but that does not justify knowing nothing.

    “No manmade law can perfectly describe motion,” says Newton, as he takes another hit from the bong and sleeps away another afternoon.

  4. 87

    “However, searches are just not cost efficient for many clients who file a lot of applications.”

    That’s disputable. It doesn’t take many office action replies and/or RCEs amending the claims to import limitations from the specification to eat through 2-3k that could have been used in a search.

    How many times has an attorney drafted a claim that was too broad because he didn’t have a clue what the close art was? And how many times has that same attorney blasted through 2-3k of the client’s money amending the claims (and burning up the DOE in the process) to include language from the spec that was originally thought to be only tangentially relevant, but is now critical? And how many times has a patent like this NOT been enforced because an analysis of the issued claims reveals that they rely on a sentence or two in the spec that would/should have been beefed up into a page or two had the close art been found.

    When attorneys tell you not to search, follow the money. Many times it goes into their pockets dealing with rejections that could have been avoided from the start.

  5. 86


    I have rarely been satisfied with the results of patent searches I’ve ordered. I remember once that I had a claim reciting a component called an “engine” for a software patent, and the patent search came back with patents directed to the automotive arts!

    Then again, I’ve never spent 2k on a patent search let alone 1k. So maybe the more you spend, the better you get.

    About the only time I’ve gotten useful search results was when I did the search myself.

  6. 85

    It is especially important to do a search for “important core technology” where you anticipate litigating the patent. After all, $2,000 right now may save the client $250,000 in fees litigating whether a narrowing amendment was tangential to the accused device. (The only meaningful way to rebut the surrender of equivalents.)

  7. 84

    Points to Ponder,

    What the hell are you talking about? The situation Gideon described was a case where an opponent invalidated the broad claim and the applicant then has to rely upon a dependent claim.

    I believe in writing a plurality of independent claims with overlapping and/or concentric scope.

    However, searches are just not cost efficient for many clients who file a lot of applications. For the small business or independent inventor, the recommendation makes more sense. Also, for important core technology and/or specific ideas you know going in are close to the line of patentability.

  8. 83

    Gideon –

    Independent claims are about infringement. Invalidity hedges are for dependent claims. Don’t mix them up.

    A $2K search creates real value most of the time. Business people fully understand the concept of finding a reasonable point on the tradeoff curve, finding the big bombs and defusing them.

    Surprisingly few lawyers understand either the efficiency of tradeoffs, and fewer understand that business people *already understand* tradeoffs. Don’t be afraid to explain to your clients something that they already know: life is imperfect, and you place your bets where they’re most likely to pay off.

  9. 82

    Someone wrote —>”These two thoughts are mutually inconsistent. Until you know what the prior art is, you can’t possibly draft the broadest claims available. Claims should NEVER be directed to what “the invention” is. That recipe is GUARANTEED to yield narrower-than-necessary claims. Claims should be drafted to claim what the PRIOR ART is NOT.”

    Well this is certainly an option – it’s just not an option I recommend to a client unless they are fishing.

    If you know what the invention is – protect the invention.

    I’d rather have solid claims that protect the commercial embodiment in the 1st claim than

    a broader claim set based on what “I thought the art wasn’t”, which results in a claim 1 that is broader than what the client really needs to protect.

    Why is that bad?

    Because by bringing in scope into claim 1 that is unnecessary, you open up the claim to attack based on prior art that wouldn’t have been an issue otherwise –

    When it goes to litigation, the art comes out that sits squarely on claim 1 as a 102 reference.

    So now you’re in the crappy position of having to argue that claim 5 is still valid. Claim 5 is the commercial embodiment.

    So when your client, who makes cardboard boxes, comes up with an invention for better cardboard and also notes that this would be particularly useful as well for landscaping backdrops, be cautious with your advice to submit a claim that captures both.

    After all, what are the odds that your cardboard box client will ever monitor/pursue a suit against a landscaping supply manufacturer.

    Your claims should claim what the art does not?


    Even if true, you’d be a fool to think that a 2,000$ search tells you what the art


  10. 81

    George says “Let the PTO figure out the prior art…..”

    If you are a hack, that is a great philosophy. Unfortunately, there are too many out there with that attitude.

    If you want to represent your client and you take pride in your work, you do not rely on the PTO to find the prior art. First, the examiner most likely won’t find the best art. And second, if the patent is to have any value, it must withstand scrutiny by an alleged infringer (or a potential licensee). I have responded to more than one Cease & Desist letter by citing invalidating art. I sure would like to listen to those attorneys explain to their clients that the patents are not enforceable.

  11. 80

    >>>>>>>These two thoughts are mutually inconsistent. Until you know what the prior art is, you can’t possibly draft the broadest claims available.<<<<<< Let the PTO figure out the prior art.....

  12. 79

    Gideon | Jul 18, 2007 at 08:17 PM writes –

    > Searches, with rare exceptions ARE WORTHLESS. …

    > But, at the end of the day, searches are a
    > giant waste of money . . .


    > And that’s the key. If you’ve got a client
    > in search of an invention – sure, do a search
    > to get an idea of what the invention might be.

    These two thoughts are mutually inconsistent. Until you know what the prior art is, you can’t possibly draft the broadest claims available.

    Claims should NEVER be directed to what “the invention” is. That recipe is GUARANTEED to yield narrower-than-necessary claims.

    Claims should be drafted to claim what the PRIOR ART is NOT.

    Gideon’s examples prove the rule – how do you know these are the right limitations? Could several of them be broader (maybe in different independent claims)? Could one or more of them be left out entirely?

    Until you know, your patents are Festo lunchmeat.

  13. 78

    “So what do you people think about the Peak Patents theory?
    Have we topped out on rate of production of ‘true innovation’?”

    My guess: an optional “Registration System” will develop in the US.

    In the near future, things will get so burdensome in the “Patent System” with all the new (and purposeless) regulations regarding claims, continuations, IDSs, “fraud”, etc. (not to mention backlogs, lack of quality, bogus rejections, and the other headaches associated with examination) that when the USPTO offers us an optional “Registration System” (with no presumption of validity, and with the penalty of one additional claim of choice stricken by an accused infringer for each registered claim adjudicated to be invalid for overbreadth), that our clients with corporate vision will (by necessity) choose to register.

    Then we will see a bifurcation of innovation in the industry, with large companies that have the resources to be self-sufficient and efficient in the Registration System continuing to innovate and be rewarded with an exclusive right, while companies that rely on the USPTO will grow more and more burdened, discouraged, unrewarded, and over-litigated in the traditional Patent System.

    And so there will be a natural selection process (one which is I think already starting with the Accelerated Examination option) which will unfortunately weed out smaller companies and/or those companies and organizations which do not have an into-the-future vision of the patenting landscape that is developing (behind closed doors) in the USA. But let’s hope that the companies weeded out for the lack of resources and/or proper patent management aren’t the innovative ones which have been the backbone of America’s industrial leadership.

    (So, can see why the IPO would like to see such “patent reform”?)

  14. 77

    Step back – good advice in general. You are right that it’s best to be neutered when it comes to politics and religon and clients.

    “Gideon, I’m still waiting to hear about all of the things YOU are doing to prepare.”

    Why? What possible difference could it make to you what I am doing?

    “And if societal collapse is imminent, how can you in good conscience take money from clients for writing patent applications that will issue around the time society begins to collapse (or, at most, a few years before)?”

    Because every man and woman has the right to make his or her own decisions based upon his or her own beliefs.

    If a client came to me tomorrow and said, “I want to invest 2 million in residential real estate in Southern California”, I’d advise that client on the legal aspects of the transaction, and then I’d execute their orders.

    Why? Because I respect their right to make their own decisions.

    By the way – if you “know plenty about peak oil”, as you say, and you don’t, in fact, think that the peak has occurred or will occur within the next few years, then you are the one and only person who I have met for whom those two things can accurately be said to be true.

  15. 76

    Peak Oil? I’m still rubbing my eyes. Must have hit the wrong bookmark. I thought this was the Patently-Oh-Oh forum.

    One thing I try to do is not mix in my personal beliefs about Peak Oil, GW, GWB, politics, religion, etc. with dealing with clients and patents. They are separate, compartmentalized areas of endeavor. People get very emotional about this stuff (as opposed to getting rational about it). They’re either 100% believers one way or 100% the other and you never know which client or colleague swings one way or the other. Best to leave those kinds of subjects out of this forum.

    So what do you people think about the Peak Patents theory?
    Have we topped out on rate of production of “true innovation”?

  16. 75

    Gideon, I’m still waiting to hear about all of the things YOU are doing to prepare. And if societal collapse is imminent, how can you in good conscience take money from clients for writing patent applications that will issue around the time society begins to collapse (or, at most, a few years before)?

  17. 73

    “We will be saved from an oil collapse through patented innovations”

    You gotta love this. Nothing like blind faith to get you through rough times.

  18. 72

    We will be saved from an oil collapse through patented innovations – unless the PTO screws it up so bad that the inventor who figures it out is told/decides not to file because patents are worthless, and then the invention never comes, and then civilation ends – all thank to Dudas and Doll!

  19. 71

    “It’s the greatest event since Jesus was crucified”

    I dunno. I thought the last episode of M*A*S*H was pretty huge.

  20. 70

    Hey metoo – good questions. The right questions.

    Instead of me giving them to you hear, go to the forums.

    Y2K? Hardly blinked an eye.

    Why? Because that was speculative. Nobody was sure what the effect would be, and there was no way to do the assessment.

    Peak oil, quite the contrary, is very predictable, both in when and, to a lesser extent, the impact it will have.

    You should be preparing. How? Go to the forums.

    As for “making a killing”, I’ll leave that to others. I have no desire to be filthy rich. My desire is much more to reduce my needs to as low as possible.


    Look into it more. Go to the Oil Drum and study all of the charts and tables that are posted there.

    The trends are unmistakable.

    It’s not headline news because . . .

    The 5 Corporations that own all of the mainstream media will not do well if the public was brought up to speed on just how dire things are.

    My goodness! With 70% of GDP attributable to people buying crap, think of the impact it would have.

    If every homeowner knew that energy costs would go up 10% a year for the next 10 years, the economy would dive into a greater recession than it is already in a single quarter.

    But enough about that here.

    Don’t be so angry with me!

    I’m trying to help.

    Stop attacking me and go do some more reading . . .

  21. 69

    I know plenty about “peak oil” etc. And I never suggested that I don’t believe that there is a finite supply of oil – abiotic oil theories are nonsense.

    But if you truly believe peak oil is behind us and will result in the end of civilization as we know it, then exactly what are you doing to prepare for that? Frankly, if I honestly believed that was going to happen, I would have A LOT of my money in oil futures right now (the collapse surely will not happen overnight, so I will have plenty of time to reap my fortunes).

    “In any case, think of me when oil gets to about 100 and gas is at about 4.50. Think that you had the warning, but you were too entrenched in your ways to consider it scientifically and fully.”

    A warning? That implies I should be doing something in response to your warning. So pray tell – what should I be doing now to get ready for all of this? And how much of that are YOU doing? (Or did you already take care of everything when you prepared for the Y2K disaster?) If it will be “the greatest event since Jesus was crucified” and is imminent, I would like to be prepared. Which reminds me – I’m running a little low on duct tape.

  22. 68

    Wow! Talk about a Freudian slip:

    I wrote:

    ” I have more than I need to survive, which is not right,”

    I meant to write:

    “I have more than I need to survive, which is not much.”


  23. 67

    Any Searcher who disagrees with my posts, all I ask is this . . .

    Please provide a link to your guarentee that you provide with your searches.

    When you guarentee, at the risk of losing a big wad of cash, that your searches don’t suck, then I’ll send you some business.

    By the way – using a Search Firm to find INVALIDATING prior art? GREAT IDEA.

    But that’s for an issued patent with claims established.

    You give me any valid patent and I can find you 2 or more references that can be reasonably used to present a 103 invalidity argument.

    Finally, to “metoo”, who wrote: “Surely if you believe all that crap at the website you linked”

    You talk as if Peak Oil is like believing in a ghost or something.


    You talk as if it’s a Kennedy death theory.

    This is really very simple science.

    There’s only so much oil left in the world. Undisputed fact.

    There will come a day when we reach a production peak and we cannot produce any more on a daily basis. Undisputed fact.

    When the supply of oil starts to wane, then the price of oil will keep going up as the supply drops (eco 101). Undisputed fact.

    The world’s economy is driven by energy, a major portion of which is gotten by burning oil and all we get from it. Undisputed fact (oil is 90% of U.S. fleet of trucks/cars energy).

    Here are the disputed facts:

    When it will occur, and,

    how bad the economic fallout will be.

    Even the highest estimates put the peak no more than 30-50 years away. Most put it much closer, and some, like the ones I have concluded are true, put it behind us.

    How bad will the fallout be? Some say, no problem. We’ll simply convert a worldwide fleet of vehicles, planes, and so on to wind and nuclear powered electric!! Get an app in for that, baby!

    Some, like me, believe that this will be the end of civilization as it now exists, and we will slowly slide into a power down that will remake the world.

    In terms of me making money?

    Let me put it this way.

    I have more than I need to survive, which is not right, and, if I’m right, there won’t be much point to having U.S. dollars anyway.

    In any case, Peak Oil is pure science. The fact is, the data are somewhat sparse. Saudi and others keep their reserves secret.

    But the data were can glean indirectly, combined with what we know for sure (Mexico -terminal decline. U.S. terminal decline. North Sea- terminal decline), paint a VERY grim picture.

    Sure, there are assumptions made. There are in every scientific conclusion.

    But please don’t suggest that predicting Peak Oil is unscientific. Nothing, in fact, could be more so.

    In any case, think of me when oil gets to about 100 and gas is at about 4.50. Think that you had the warning, but you were too entrenched in your ways to consider it scientifically and fully.

    Better yet, go to a Peak Oil forum and post, rationally, why you think Peak is not upon us.

    If you’re at all reasonable you’ll be converted within a few months.

    It took me about 10 hours to go from “Peak what?” to “wow. this merits much more reading.”

    About 1,000 hours of reading later, here I am.

    You? What’d you give it? 10 minutes? Do yourself a favor – give it another 10 hours.

    Trust me – it’s transformative.

  24. 66

    Wow, Gideon – you’re going to make a fortune with all that money you have invested in oil futures and other stuff like that. Surely if you believe all that crap at the website you linked to then you have all your money invested in oil futures and the like – well, I guess at least the money you have left over after you’ve built your compound. Still, you are gonna be a rich and powerful man if you play your cards right.

  25. 65


    1. If you think that inventors genuinely have not considered the mass of relevant prior art while trying to make things work, maybe you lack appreciation for the way engineering is taught and done today … it’s not that engineers spend all day reading “millions of documents”, it’s just that most do spend a few hours a week skimming through the most relevant tech journals and quite possibly the most relevant recent patent publications … then they get a good idea from something (maybe read years previously) not quite directed to the problem they’re solving, and they go implement that idea. Then their in-house (your client contact) brings you the invention disclosure, you file an un-searched app, and the Examiner misses the relevant art that inspired the inventor. So your app grants, and you think that you’re a successful patent practitioner.

    2. Then your client’s biggest competitor hires us to do an invalidity search, we poke a little bit, we find the piece of art that almost certainly inspired the original invention, we give it to our client, they take it to court for a d.j., and your granted patent ceases to have value for your client.

    3. Concur with your statement re: the big game. From that perspective, you truly are a successful practitioner. From your client’s perspective, maybe you run a lottery with really good odds and cheap tickets. I guess from a business perspective, that’s successful as well!

    4. Concur with peak oil.

    Always fun reading the postings here!

  26. 64

    “The local courts in Israel ruled against one of the practitioners here”

    We claim a method for practicinig apartheid, comprising . . .

  27. 63

    This is a lose – lose situation since
    Searching works by the Law of Diminishing Returns.

    Somewhere along the line, one has to decide that it is worth drafting claims around the prior art uncovered. you can never tell what you have not found only what yuo have, but clients do not understand this.

    The local courts in Israel ruled against one of the practitioners here (who is also a licensed patent agent and attorney-in-law in the States), for missing something in his search and giving a positive opinion. His search was subcontracted to an ex US Examiner.

    Consequently, for insurance reasons most Israel patent firms won’t provide searches at all! I do offer a preliminary search and opinion for a fixed fee to clients, so have the material available to file as a Petition to make special anyway, and have had some patents issuing without office actios in crwoded fields, but one cannot spend more than a few hours on this. Somewhere along the line one has to say: OK, it’s worth the gamble.

    Now if the USPTO relies on the search I’ve done, then they are not examining, merely rubber stamping my work. On the other hand, if the examiner does independent searching, they start from where I left off. Whastever they found, I’ve clearly missed!

    The clients will want refunds if they don’t get a patent since any office action will either indicate that I’ve missunderstood the prior art or that I’ve missed it.

    Insurance premiums will hit the roof. Cost of patents will have to reflect that. Meanwhile, the US Examiners, who anyway tend to overlook non patent literature and foreign filings, will be less experienced at searching and therefore less capable at it. the quality of the examination and assumption of validity will thus be further erroded.

    Finally, one hypothesises that the USPTO will take the next logic step
    and expect us to do the ISR and IPER for PCT applications, after all, they frequently do not manage to get searches out within 30 months of filing, forget about the four months it’s supposed to take!

  28. 61

    AnonEPA –

    Sure, of course a US Applicant has to get an export licence – I remember when we still had them here, useless things – but does this mean a US Applicant can’t use a foreign PO to do a search in practice?

    Because …

    … if the postulated requirement would apply only to US Regular filings (& PCTs designating US if you intend to enter US national phase?), which seems reasonable since you don’t have to file an IDS on a provisional, then your US Applicant could file a provisional, which he’ll be doing anyway, get the export licence with the filing, and then get his foreign PO search during the convention year. Cheapest way to do this would be to file a non-convention GB application with the provisional text and get that searched, but a non-con EP would do the same job, maybe give you a bit better search but cost more. Alternative might be to pay either PO for a search outside the context of an App, which I think both sell as a service, although it costs more. The CH PO also offers something similar.


    (I doubt the EPO would release working docs because that would lead to Applicants gripinga bout the methodology etc, but you never know, if you paid them …)

    Another question – could the US law impose this on PCT-based Apps, or is there something in the PCT to stop that. But maybe this is a dead letter because you’d have the ISR to go on by the time you national phased. Unless the USPTO, which seems to be v slow with ISRs, was the ISA, I suppose.

  29. 60

    “This whole thing does seem silly when you think about it. I mean, considering our eventual economic collapse in about 50-100 years after the oil dwindles to a certain amount and the entire world at war breaks every society to pieces . . .”

    Well, you’re right, but you’re off about 40-50 years.

    The peaking of oil is NOW.

    It’s the greatest event since Jesus was crucified and only a very small, very informed subset of individuals understand where we’re at.

    You want to be one of them? Try

    You wonder why oil won’t beg off 75 when all of the “experts” are saying that there is plenty of oil?

    You wonder why gas is going up and staying up?

    You wonder why the greatest empire ever to dominate the world is waging a war in the middle of nowhere where the largest and best reserves of light sweet crude are located?

    It ain’t big oil.

    It’s the end of cheap oil.

    Now we’re onto the less sweet, less light stuff, and it’s harder to get every day.

    Take the plunge. If you’re an open minded thinker, it won’t take you more than one day’s worth of reading to figure out the situation that CNN and Fox won’t tell you.

    Or check out . . .link to

  30. 59

    Alun: It may be hard for a searcher, rather than the prosecuting attorney, to write the required analysis. If this provision is enacted, the PTO would likely require that the submitted patentability analysis be directed to the filed claims. That would be difficult for a searcher to provide unless they are provided with the claims.

  31. 58

    Perhaps the solution would be to offer alternatives to the USPTO. How about?

    “No legal entity or subsidiaries thereof may file more than 30 non-provisional patent applications in any 12 month period.”

    That might help the backlog.


  32. 57

    There are huge variations in the quality of search companies. Making searches compulsory provides an incentive to use a very cheap one. Some cheap ones are actually very good, at least in low tech, but many aren’t. Most of the cheaper companies don’t have anyone who can understand more complex areas of art (they often have people who understand the search process extremely well, but lack technical background). Some, including some of the more expensive companies and not just the cheaper ones, rely too much on keywords (rather like examiners!). Some of them have multiple PhDs on staff, but little idea about how to conduct a search. Some are already outsourcing to India, but that probably isn’t one of the things that will affect quality, beleive it or not. It may well improve quality, as they may be able to spend more time on the search.

    I predict that the demand will be for searchers who have a reg. number, so that they can write that analysis that the PTO require, instead of the poor soul who is preparing the application. I am lucky enough to do prosecution work as a patent agent, but for many years I was a searcher, mostly before I got a reg. number. However, I know many agents who are still full time searchers, and I predict that their ability to provide a search with a patentability opinion will be in demand if this comes to pass (read Sperry v Florida if you doubt that agents can provide a legal opinion on patentability, and you will find that we can).

  33. 56

    Darn Gideon, tell us how you really feel. Ha ha.

    This whole thing does seem silly when you think about it. I mean, considering our eventual economic collapse in about 50-100 years after the oil dwindles to a certain amount and the entire world at war breaks every society to pieces, this stuff seems so goofy. So too are all the protests of the current “war”, which is nothing compared to what is coming our way.

    I just want this patent game to be less complex! Mr T’s head hurts!

  34. 55

    But, Gideon, Chewbacca lives on the planet Endor. Now think about it; that does not make sense!

  35. 54

    Well, asking a searcher’s opinion on the value of searches is kinduv like asking malpractice bottom feeders about the merits of tort reform law.

    Sorry. Any way you slice it, most searches are worthless and the client would be better off saving search fees for more filings.

    Bottom line – “good” search and attorney review – 3 grand.

    Good application with very detailed claims and spec – 6 grand.

    Why increase the price 50% to get art that would likely never have been on the record anyway? Think about that. You’re spending money to dig up art that very likely would never have seen the light of day, and that, if it did rise up in an Office Action, you could amend around IF you had a real invention and IF you properly supported all of the fall back positions in the spec.

    You want the ultimate test?

    Have two “professional” art search groups search for the same thing.

    We already know that the EPO and the USPTO will both run searches, produce 10 docs each, none of which are the same. They’re allegedly well staffed and well equiped to do the searches. Right?

    Seriously. You have a million dollar client?

    Want to save them some money?

    Hire search firm A and search firm B to both search the same thing.

    When you get 20 docs back from A and 30 docs back from B and only 5 of the docs are the same, then you’ll realize you’re throwing your money away, especially when you read the 5 common docs and they’re all 103 throw away crap that may or may not be used in a rejection depending upon the Examiner Whimsey of the Day.

    Does anybody think it’s feasable to search for 103 art?

    Come on! Get the hell out of here. You invent a pencil with a widget on it? There are 500 patents on pencils and 500 patents on widgets, and any combination of 2 could be the basis of the “103a it’s obvious because I said so” rejection that you will no doubt get.

    A big search house person wrote:
    “[If you have an INVENTION] then a good search of patents . . . will enable you to draft around the analogous art that your inventor “never considered” as analogous, even though it seems likely to have inspired his invention in his own field.”


    That’s a big load of crap to mush into one paragraph. Did you get any poop on yourself doing that?

    Your bizare – never been involved in patent app drafting – response merits the following replies:

    1. My inventors “never consider” MOST of the art that is ever cited against us before we file. But not becaues we lack searches. What do you think these guys do all day? Sit around reading patent publications? These guys are busy making stuff work, not reading the millions of documents that are being pumped out each year.

    2. I never need to “draft around” art. In all my years and all my apps and responses, and there are too many to think about, I have had a real live 102 rejection about 10% of the time. The other 90% have all been 103. Further, of the 10% 102s, I’ve been able to easily add dependent limitations to remove the 102 rejection 100% of the time.

    So think about that. After the amendment, I’m right where I would have been (almost) had I not spent the 3 grand, ASSUMING you would have found the art in question.

    Searches are a scam, and I’d prove it if I had the inclination, which I don’t.

    Because, just like you wouldn’t be able to convince an aboriginal tribesman that saying the names of the deceased would not, in fact, bring big evil down upon them, you will not convince lilly livered attornies that they are spending their client’s money frivolously – they want the illusion of protection baby, and so do the clients.

    “We did a search!”

    Nice cover for writing crappy applications with crappy spec support.

    For all of you “professional” searchers: Please post your “no relevant document left unfound!” guarentee that you offer, I’d like to read it.

    What’s that? You offer no such thing? IN FACT, not only do you NOT offer any guarentee that your search is worth a crap, you include a WAIVER that says, “we don’t guarentee anything and you should not assume that this search is any good.” Isn’t that right?

    Finally, for you newbs, young pups, and the guys who give a shat out there – here’s a tip from an old timer:

    The patent system is a big load of crap. It’s a game, pure and simple, with Examiners trying to do as little as possible to get as many counts as possible, “inventors” filing any old crap that might shake out, mega corps doing the shotgun and crap on the wall approach (3500 per app) to try to get a stack of patents that can be waved around, a clueless Congress that is so ridiculously moronic that, in the face of the end of the oil age and the beginning of an imminent decline in the oil supply and energy in general think that the solution is to pass laws that make it illegal for OPEC to control prices (!!!!!!), so there’s no hope that these bozos will have any clue about something as recondite as patent law, – further – mega corps run the show more every year, and each new law and each new SC decision tilts the field more in their favor . . .

    In other words . . .

    ………….IT’S A GAME.

    There is no objectivity. There is no invention. There is nothing.

    There is only a client with a desire to acquire patents and there is you, with a desire to make money.

    You begin to get really good at the game when you realize 1. It IS, in fact, a game, and 2. To win the game – i.e. do well for the client and yourself – you must play the game within the framework of the game as it exists, not how it would ideally exist.

    Do those things, relax, don’t take on clients who give you drafts on the 364.5 day mark, and you’ll be surprised how easy it is to bend the spoon. . .

    [there is no spoon]

  36. 53

    “On another similar topic: The first published AE (US 7,188,939) signed (sorry Mr. Churna) Statement of Pre-examination search is a very poor model to work from. The documented US classification search encompasses 13,000 references”

    In some arts, the USPTO sub classes contain around 2000-4000 references per sub class. For example, see some of the sub classes under 709. In those arts, even a modest search of a few relevant subclasses is easily going to exceed 10,000 references.

  37. 52

    “If you have an INVENTION …”

    … then a good search of patents / published applications / non-patent literature (NPL) will enable you to draft around the analogous art that your inventor “never considered” as analogous, even though it seems likely to have inspired his invention in his own field.

    “Boolean strategies used at the PTO’s search room on EAST.”

    … reasonable searchers can differ whether the PTO’s search engine / database are the best out there. They are the best available to the general public who are conveniently located for physical access to USPTO offices.

    Good search firms invest several million dollars a year for access to commercially abstracted databases and searchable full-text of NPL, in addition to searchable pdf’s of patents from several national offices and WIPO. Our firm in particular has invested a great deal of time and money in developing an in-house contextual search engine …

    But like “public searcher”, we are maxed-out on work right now. This proposed rule should only exacerbate that pleasant situation!

  38. 51

    I don’t see any problem with allowing micro entities to costs associated with patenting, but given that going on record with a patentability analysis has a significant effect on the the enforceability of a patent, these rules would provide a substantive difference between patents granted to different sized applicants.

    If there is a way around the inequitable conduct and estoppel effects of providing your attorney’s pre submital analysis to the patent office, then we’d have a fair set of rules, but I don’t see that happening.

  39. 50

    If you want to see what kind of search and analysis will be required, take a look at the requirements for a petition for accelerated examination. July 18, 2006 OG. The search must include US and foreign patent docuements as well as NPL. The search logic and databases searched must be provided as well as the date of the search. A foreign search report will not suffice unless it satisfies these requirements. They generally don’t.

    Then the fun begins. The analysis must include an indentification of all limitations in the claims that are disclosed in the references and a detailed explanation of how each of the claims are patentable over the references. Also a statement of utility and a showing of where each limitation of the claims finds support in the specification.

    The next question is “what will the PTO do with this submission”? If they reduce the amount of time the examiner has to examine each application, to reduce pendency, then how can they argue that quality will improve. If they do not reduce the time, then pendency will not be significantly impacted. The impact will be on the applicants who will be paying much more per application.

    The other concern is that the requirement will be implemented retroactively and certain % of the backlog of applications will be abandoned without examination thus helping pendency. This is called the “drop-out”.

    Beware of the justification based on improving “quality” without know all of the implementation details.

  40. 49

    Maybe I missed something? The proposed statute is manna from heaven for litigators. This is a disaster for patentees unless Congress also addresses inequitable conduct. Are there any litigators out there that would like to comment?

  41. 48


    Thanks for proving my point. Please let me know which companies have unlimited resources. I’d love to work with them.


  42. 47

    I agree that many patent attorneys for some reason or another do not take the time to perform a cursory search. I believe this is a disservice to the client. It also hurts the patent office by wasting valuable resources. I agree the forced searches will cool the jets of companies with respect to taking the shotgun approach. In short, forced searches wil definitely benefit the small guy and work to the detriment of the big guy.

  43. 46

    Judging from our experience with petitions for accelerated examination, a mandated search provision may be abused by the PTO. They may nitpick search strategies and bounce applications for bad searches, or for inadequate explanations of patentability, without ever doing their own search or considering the applications on the merits.

  44. 45

    I have to generally agree with Anastasia above. I was an Examiner for 5 years and worked in the industry I examined for several years before that. I was continuously amazed at how large companies would file broad patent claims on inventions that had already been patented years if not decades earlier (and yes sometimes even by the same company using substantially the same claim language). I kind of suspect that some of the larger patent filing companies file such a large number of patents that the attorneys who write the claims do not put much emphasis on having the inventors check the filed claims for novelty.

  45. 44

    What is going to constitute an “adequate” search? If a first person does a half-assed job for one application (spending 1 hour to come up with 10 crappy references) vs. if a second person does a great job for a different application (spending all day and coming up with 10 great references), who at the PTO is going to tell the first person that they can’t have a patent merely because their search sucked?

    It seems as if, once again, this is a crappy directive due (at least) to QC issues.

    This is not to mention the liability issues if your search and analysis is “not good enough” and the application is abandoned.

  46. 43

    Seeing as how this discussion is directed towards my line of work, I’ve really enjoyed the discussion so far. Gideon’s comment: “Searches, with rare exceptions ARE WORTHLESS” is particularly on point.

    I like to consider my firm to be the “rare exception” search provider and must agree with Gideon with regard to the majority of the folks in my industry. Luckily there are a number of small (not large!) firms that also fall in the “rare exception” category. Unfortunately for you, we’re also always busy, don’t advertise, and grow only through word of mouth.

    Since I’m already at capacity I’ll keep this post anonymous since I can not handle a flood of queries! But here is a short list of things to demand from your search firm to improve your chances of a quality search:

    1) A documented field of search including classification, key word, Boolean strategies used at the PTO’s search room on EAST. The ex-examiners in your firm can tell a good search from a bad one in less than a minute.
    2) Approximately 10 references for a patentability search with non-characterizing notes provided for each and every reference. If the searcher though it was worth including, let them point out why.
    3) The name and contact information of the actual person performing the search so you can grill them on relevance (even better for validity searches). Because references are not characterized, a single phone call can let you know which document is a 102 reference in 30 seconds.

    On another similar topic: The first published AE (US 7,188,939) signed (sorry Mr. Churna) Statement of Pre-examination search is a very poor model to work from. The documented US classification search encompasses 13,000 references, IPC classification search encompasses 16,000 references, and the ten key word based searches range between 4,000 and 175,000 references. I’ll let you draw your own conclusions regarding what was actually performed.


    A hard working public searcher.

  47. 41

    Say what you will JohnDarling, I’m speaking from my personal experience here. I’m not trying to chastise all companies here, but one in particular (that I handle apps for on a regular basis, and that will remain unnamed) has planted a very big seed of doubt with me from their past actions. It just seems that the patent strategy with some of these companies is to throw enough sh@# at the wall, and eventually something will stick; or in other words, eventually our app will end up on the desk of a new and inexperienced examiner and it’ll slide through.

  48. 40

    “I think the point here is to make patentees, particularly large megacorporations with endless resources dedicated to IP, think twice before submitting applications that they know are not patentable.”

    Only an examiner could have posted this.

  49. 39

    Budge – 103(c) is actually pretty limited and only applies to rejections based on references that only qualify as prior art 102(e), (f), or (g). 103(c) also won’t get you out of a double patenting rejection.

  50. 38

    Actually, would an EPO search report, accompanied by comments on relevance of cited documents, be sufficient by itself to meet the proposed rules? If you first file at the EPO, this would be available prior to filing in the US, so would constitute a pre-filing search. It could be used by the applicant to amend, if necessary, prior to the US filing, so it would meet the policy considerations.

    Of course, this wouldn’t be helpful for US applicants, but for the rest of us, this could be relatively straightforward (or am I being unwarrantedly optimistic here?!)

  51. 37

    Confused of London – “Would this sort of requirement be satisfied if another PATENT OFFICE conducted a search on the same text at an appropriate stage?”

    US-based applicants would need to get an export licence prior to sending a specification overseas for searching purposes (depending on when the search needed to be submitted to the USPTO). However, this might be a cost effective route for non-US based applicants.

    Another suggestion: if you’ve first filed at the EPO, say, perhaps you could pay an additional fee for a copy of the search examiner’s ‘working’ document, from which he or she drew up the search report, and submit this as the “applicant-provided search”? The EPO would get an extra (reasonable!) fee for little additional effort on their part and the applicant could say they had acted in an equitable manner by using demonstrable experts.

  52. 36

    Gosh, just when you think it can’t get worse, it does. The scathing comments above regarding the practical value of pre-filing commercial searches are unfortunately correct in my opinion. I’m happy enough with the quality of searching I’ve had done in most ways but I don’t think I’ve ever known a client change its decision as to whether or not to file on the basis of a pre-filing search, so it’s never been good value. For it to be any good, I think you’d have to do it on the basis of a nearly-ready text and then the Applicant is practically committed to filing anyway and may as well go ahead and find out what some PO somewhere turns up.

    The serious prior art is usually either (a) known to the inventor already because he works in the field, or (b) not located anyway until the EPO gets its nasty little mind round the case …

    Is it just me or has the US system simply got all this wrong from the start? Yes, duty of disclosure looks like a good idea in principle and, yes, other laws (AU, GB, EP, IL, CA) have some generally analagous mechanism already or are drifting somewhat that way, but the US system just seems to think it’s OK to burden the Applicant ever more greatly and never address the fact that USPTO searches are poor. Why not look harder at doing better searches and maybe charging more for them, and do away with all this nonsense? I don’t like to say the EPO is perfect but I do think it’s better. Basically, it finds pretty decent art most of the time, whcih suggests that a PO-led system as opposed to an Applicant-led one can work. Sometimes the EPO does drop the ball, in which case Opposition proceedings are not a lot of fun for the Patentee, but not often, and the new art the Opponent blows you away with isn’t usually stuff you knew about or would have found by searching anyway, it’s normally something someone on their side just happens to know about.

    Also, aren’t all those requirements really satisfied by a thoroughly and honestly written spec anyway?

    Question – would this sort of requirement be satisfied if another PATENT OFFICE conducted a search on the same text at an appropriate stage? Because that is a service that can always be bought in one way or another (sometimes involving filing an actual application sometimes not) from the EPO, British Patent Office and Swiss Patent Office (and others, for all I know), and possibly cheaper and better than from a commercial provider.

  53. 35

    When you fly a light plane, you take steps to ensure (in your own interest) that every one of its vital parts is airworthy, before you take off. When you fly a patent out of the issue door of the USPTO you have no such “own interest” to check that every one of its claims will, as far as you can manage it, withstand prior art attack. Instead, there is a perverse interest, to get all sorts of non-airworthy claims issued, I suppose because they are nevertheless intimidatory. Until Congress installs some judicious and proportionate legal incentive for Applicants, IN THEIR OWN INTERESTS, to strip out of their apps ALL claims that are not going to withstand validity attacks after issue, this sad squabbling will continue indefinitely.

  54. 34

    Anastasia Beaverhausen-are you kidding? Did you see who sponsored the bill? Are you really an examiner, cause 103(c) lets me get around my own art quite a bit. Don’t need a bogus limitation. Good golly, with your attitude, I hope you are not on any of my cases. Maybe examining it myself is not so bad.

  55. 33

    SF, your idea is very good for a reason that has not yet been mentioned here. Search reports made by applicants are most problematic as part of a prosecution history. It is likely that if enacted, the PTO will require a “traced” search report as the PTO does now, with keywords and logical connectors among search terms shown. The problem with that, is that these applicant’s search strategies will be held against the patentee when claim construction takes place, weakening the claims in a manner worse than any interpertive statements we used to make in IDS filings. By using the PTO’s PCT search strategy rather than our own, we concede nothing in terms of claim terms and the reasons for selecting certain search terms. It is the PTO searcher that will select the terms and logical connectors for the search, just as they do today.

    A patentee

  56. 32

    I think the point here is to make patentees, particularly large megacorporations with endless resources dedicated to IP, think twice before submitting applications that they know are not patentable. As an examiner, I constantly see these companies submitting multiple applications for the same exact invention, cleverly using different claim language and perhaps adding some bogus limitation to get around their own prior art, and then trying to argue that their invention is novel and nonobvious – – oh yeah, and conveniently forgetting to include the most relevant prior art (usually their own prior patents) on the IDS.

  57. 30

    So we just got a whole lot more legal work, thanks. Big question: Under post-patent opposition, we got to fight for our patent with one amendment. Ok got that, now under the new turd rules of the USPTO, I can’t keep a continuation open on the event I get fried in the post-grant opposition. Wow, nice tag team guys.

    Can we start calling our congressman and demand another amendment where the newly enacted laws would not permit modification to continuation/RCE/10claims etc. practice?

  58. 29

    “Write it up, work the numbers around the wt%, describe the Cobalt in every way you can (nano particulate, colloidal, whatever), and submit it.<." Nano particulate is so 2003. It's all about subnano or pico particulate now.

  59. 28

    A useless but amusing analogy just struck me. The Examining Corps and the private sector (agents, attorneys, searchers) are like a big diode. If you bias the diode with crappy PTO policies and management, a large number of charge carriers (i.e., Examiners) flee to the private sector. But there’s no reverse biasing going on here; you can’t pay me enough to be an Examiner.

  60. 27

    In response to Dennis’ comment about the salaries for good searchers going up, I believe that would draw away many of the best examiners, making attrition and pendency even worse than they are now. Over half the new people in my art unit are gone before two years, some of them to be searchers or agents.

  61. 26

    Wow. A new high on the PTO bizarro scale.

    Well, the reaction will be predictable.

    Spend a de minimis amount to get a crappy search done by a “professional” search company.

    Submit the results with boilerplate, “is not destructive of patentability because it lacks . . . and does not suggest,”

    Bill the client an extra grand for the effort.

    How about this.

    Search comes back and the monkey who did the search gives you 40 references.

    30 US, 7 EP, and 3 in Japanese, just so we can all wink and think that a search of japanese abstracts is worth a damn.

    You now have to review 40 references to be able to put the boilplate on them. 40. Even if you read only a portion of each, you are looking at gobs of time to do the job right.

    And I reiterate . . .

    Searches, with rare exceptions ARE WORTHLESS.

    They are preferred by attorneys because the attorneys want to cover their asses and don’t want a client coming back in a year when killer art is produced and saying, “if we had done a search [and found this] I would never have paid you 5 grand to write the application.”

    Clients like it so that, when they get asked the same question by their superior, they can say, “hey the attorney did a search, and we didn’t know about that.”

    But, at the end of the day, searches are a giant waste of money . . .


    And that’s the key. If you’ve got a client in search of an invention – sure, do a search to get an idea of what the invention might be.

    But if your client alread has an invention – then write it up with detailed fall back positions, and save the money.


    The invention is a widget with >70wt% Cobalt, green, having a cDNA with the sequence TTGCCCAA, and with a retractable membrane for reversibly removing water. The wt% and the Cobalt are the novel features.

    Write it up, work the numbers around the wt%, describe the Cobalt in every way you can (nano particulate, colloidal, whatever), and submit it.

    Money saved on search – 2k+1k of an attorney’s time to review the art. THat’s 3k.

    If you charge 6k an app, that’s a extra app for every art search you don’t buy.

    In any case, if you really have an invention, you will almost never get art back from a search that’s dead on.

    So what’s saved?

    Maybe you file claims originally that avoid the found art. But if you wrote the dependents correctly in the first place, you’d already be there. And there’s continuations for that anyway – if tough art comes in on top of you, file a new set of claims or a new app.


    If you had an invention and you wrote it up right, you have the disclosure, so you can write the new claims.


  62. 25

    With a registration system, the PTO could cut the “examining” force to a mere fraction of what it is. Examiners not retained can be “certified,” let go (with help to place them within one of many a quasi-government competitive searching agencies), and then hired as needed.

    Those wishing to enter the certified searching profession would compete with those already in it, and the ratings of individuals could be measured more objectively with feedback, opposition statistics etc. Compensation could be carried out in a piecework manner.

    Meanwhile, business on our end would require more analysis at the front end, but with much less stress from prolonged prosecution. And we would have a boatload of work in opposition proceedings.

    I believe this is the way to go.

  63. 24

    L: “If applicants are going to, in effect, perform a self-examination–and I’m not saying this is a bad idea–then why not go to a registration system, eliminate the presumption of validity, etc.? Of what use is the examiner?”

    JJ: “I would agree that if an applicant does the search, the app may as well move on to opposition.”

    I wholeheartedly agree.

    And when is this crap going to end!

  64. 23

    I think Congress should pre-empt all state law codes governing the assignment of inventor rights to a company by an individual. It should include language to the effect that a company is given Shop Rights only unless an inventor is represented by an attorney and negotiates the assignment rights and compensation therefor, separately after the employment agreement is entered into. I would even conject that a cooling-off period be established whereby negotiation over an employee’s intellectual property rights could not commence until 6 months of full time employment has lapsed. This way the employee can evaluate whether he believes the company will put his ideas to best use.

    Of course an employee could always opt-out of having an attorney represent them (in writing and the burden being on the company to allege the same). In addition to sports attorneys, there would be inventor attorneys.

  65. 22

    SF Great Idea:
    Unfortunately it would advance their agenda that every patent application filed with the U.S. gets published. It would be a de facto 300 increase in revenue per filing for the USPTO. However, I think it is an interesting procedure. Thank you for mentioning it.

  66. 21

    As far as an extensive discussion of the prior art…

    When this was simply a petition to make special, I filed a couple for a client of the law firm I worked for. For the “extensive” discussion I essentially used the abstract or the summary of the invention and then added a sentence identifying some exemplary limitations that they were lacking. Not particularly extensive Both sailed through at the time.

    Not sure if the discussion requirements have increased since the change to accelerated examination.

  67. 18

    Despite the lack of quality of the ISR and IPER, I say file in the PCT, designate the US as the searching authority, nationalize back into the US and submit of the ISR and IPER. Let the USPTO try to argue that their own search isn’t good enough.

  68. 17

    Is there any chance that Dudas is going to limit the number of companies authorized to provide the search and then be the majority shareholder of each company?

  69. 16

    Many PCT searches are borderline criminal – the PTO takes the applicant’s money for doing a search, but the results are often completely useless. On top of that, most of them seem to be late – sometimes by more than a year. My suspicion is that absolutely no one at the PTO cares about the quality of PCT search reports – examiners can produce crappy PCT search reports with no risk that someone above them might actually look at what they produce.

    Something is seriously wrong when a PCT search report cites two “A” references, and then the SAME examiner issues an office action in the corresponding US application with the same exact claims several months later rejecting all of the claims based on several references not cited in the PCT search report. Similarly, I recall one case in which I received a PCT Written Opinion rejecting all of the claims. I filed a response arguing patentability, with no claim amendments, and the examiner issued a IPER indicating all of the claims were allowable. A few months later, that same examiner rejected the exact same claims in the corresponding US application, over the same art which was overcome in the PCT. Granted, the response to that office action was very easy, but the PTO has no business imposing new requirements on applicants when many of their own examiners are incapable of or unwilling to follow the existing rules.

    And yes, there are many outstanding examiners at the PTO. I feel sorry for them.

  70. 15

    “Micro-entity” is a propoganda ploy.
    Big IT is out to screw small companies (and less so independent inventors) with this bill by eliminating the ability to collect damages, and by making patent prosecution even MORE of a minefield where any patnet can be disqualified by Monday-morning-quarterbacking inequitable conduct charges.
    The “micro-entity” thing is a RED-HERRING – big IT is not scared of them, so they “support micro-entities” so nobody can accuse them of being “anti-independent inventor” or “out to screw the small guys” – which, of course, is their real intention.
    This is a DISTRACTION from the real core of the bill – the damages thing (like someone wrote in an earlier message, unless there is a threat of a BIG damages payout, no company would EVER pay a “reasonable damamges payout” – they would just roll the dice and take their chances against the small entity).
    The BSA wants to gut the patent system so that infringers can sleep at night, with marginal negative consequences.
    The micro-entity thing is to distract the American public from what they actually want to do.

  71. 14

    George asked, “What’s a “micro-entity”?

    From: link to

    (b) Micro-Entity Status

    We recognize that any AQS program – with requirements for more and better information – must not be overly burdensome in general, and must be sensitive to the particular situation of independent inventors and small entities.

    Accordingly, the USPTO recommends that the bill be amended to define a “micro-entity” status that would ensure fair access to the patent system for entry-level type inventors. The definition of “micro-entity” could be based on a number of factors including: income level; number of patent applications filed; lack of representation by a registered practitioner; and lack of assignment activity. The status would exempt an applicant from some or all of the requirements of an AQSs program.

    That status also could be used to identify inventors eligible for reduced fees and other treatment and assistance designed to ensure fair access to the patent system.


    Note that it includes an income level test.

    1. Should I file my last Federal Tax Return with my application?

    2. What kind of patent examiner am I going to get if I identify myself as indigent?

    Jed Margolin

  72. 13

    What is examination without a search? What would the fees be paying for?

    When I was at the PTO, most examiners did not trust the PCT searches. I still get the feeling these are not considered. I feel the searching is a big part of the examination.

    I would agree that if an applicant does the search, the app may as well move on to opposition.

    I do prefer a good Ex Corps. that knows the art and where to find it.

  73. 12

    Opampman, that’s precisely what the PTO used to require for all IDSs – a pertinency statement for every reference (currently, that’s only required for references not in English). Of course such pertinency statements were pretty useless to the Examiner – which is one of reasons the PTO did away with them. But this proposed statutory language appears to go well beyond the submission of vague pertinency statements.

    And while we’re at it, perhaps the PTO should propose some new rules requiring compliance with 35 USC 114 in every application. I’m surprised the PTO has yet think of that one.

  74. 11

    Nice – with each crappy amendment like this, the less likely it becomes that the patent reform bill has a chance of being passed by Congress. Of course pre-filing patentability searches are wise. But mandating such searches, as well as the filing of search reports and patentability analyses is ridiculous. And why should “micro-entities” get a free pass?

  75. 10

    Applicants from micro-entities, as defined in section 124 of this title, shall not be subject to the requirements of any regulations promulgated pursuant to this section.”<<< What's a "micro-entity"?

  76. 9

    I don’t understand the point of doing the search if the Examiner is going to do another one, or will the Examiner use Applicant’s search result without doing his own?

  77. 8

    Opampman: In the absence of any adverse regulations to such practice, I think your discussion will be typical.

  78. 7

    If applicants are going to, in effect, perform a self-examination–and I’m not saying this is a bad idea–then why not go to a registration system, eliminate the presumption of validity, etc.? Of what use is the examiner?

  79. 6

    As I mentioned in another post, rules like these are geared towards making each examination requiring a lower, more uniform amount of effort — thus allowing them to demand more production from examiners (or perhaps to facilitate outsourcing initial examination overseas).

  80. 5

    Yeah, I just saw my costs per application going up and my fee cap staying the same.
    The Intel/HP model of $3.5k attorney fees per application was bad enough (bad enough that we fired clients like that), but now I have to spend time doing a prior art search and EXPLAINING it to the PTO. Bugger that!
    Landon (from a very quick scan of their site) charges $110/hr to search. Whereas I charge $250/hr to write the App. So for every 2 hrs of searching I give up 1 hour of writing time. Which means I am 1 hour closer to a malpractice claim.

  81. 4

    @Jed -> good one.

    I can see my “extensive discussion” going something like this: “Publication 1 discloses A and publication 2 discloses B; therefore, the publications alone or in combination do not teach or suggest [quote claim verbatim].”

  82. 3

    They want Applicants to provide an extensive discussion of how the submitted prior art relates to each claim.

    Examiners already give vague reasons for rejecting applications, forcing Applicants to, in effect, reject their own applications.

    Since we are already doing most of the Examiner’s job, I think I should be able to issue my own Notice of Allowance, too.

    Jed Margolin

  83. 1

    And who’s going to conduct ALL these searches? Look for a cottage industry to arise with not-so-qualified staffing (say, in India, perhaps) and not-so-quality results.

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